The Alice Chronicles Continue: In this chapter - East Moves Closer to West


 In June of this year, we noted that the Eastern District of Texas began requiring a showing of good cause and leave from the Court if a defendant wanted to file a dispositive motion under 35 U.S.C. § 101 (i.e., an allegation of patent claim invalidity for non-statutory subject matter) before a Claim Construction Order issued. Meanwhile, orders were coming from the Western District of Texas stating that claim construction was not required before such motions could be considered by the court. 

Now, Judge Rodney Gilstrap of the Eastern District of Texas has issued a new order that may move the Eastern District closer to the Western District’s viewpoint. The new order allows filing of § 101 motions before claim construction if accompanied by a certification that lead counsel for each party met and conferred “one-on-one” and that the parties agree or disagree that prior claim construction is not needed to inform the court’s analysis as to patentability.

 If the parties disagree as to whether claim construction is needed prior to filing a § 101 motion, then they must submit a joint letter (maximum two pages from each side) “setting forth their respective specifics surrounding such disagreement, including, in particular, any claim terms that the respondent believes need to be construed, why such is needed, and what intrinsic references support such position.”

 Failure to file the certification leads to dismissal of the § 101 motion. Additionally, the court may still require that claim construction be completed before considering the invalidity claim.

 We’ll keep you posted on further chapters in the story of Alice

Illustration: “The White Rabbit”, Alice in Wonderland, The Project Gutenberg EBook of Tenniel Illustrations for Alice in Wonderland, by Sir John Tenniel (Copyright expired).



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